WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Leon Key

Case No. D2021-3132

1. The Parties

The Complainant is Fenix International Limited c/o Walters Law Group, United States.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Leon Key, Ethiopia.

2. The Domain Name and Registrar

The disputed domain name <onlyxxxfans.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint in relation to <fansonlyporn.com> and <onlyxxxfans.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. Further to the communication received on October 6, 2021, from the Complainant, requesting the suspension of the proceeding, the Center confirmed that the administrative proceeding was suspended on October 7, 2021. On October 7, 2021, the Center confirmed that the concerned Parties have agreed to the transfer of <fansonlyporn.com>. Further to the Complainant’s communication dated October 8, 2021 confirming the implementation of the Parties’ settlement agreement concerning <fansonlyporn.com>, the Center confirmed that the administrative proceeding was partially dismissed as of October 15, 2021.

On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2021. On October 6, 2021, the Complainant wished to proceed with the Complaint solely against <onlyxxxfans.com>.

The Center verified that the Complaint together with the amended Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2021.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 23, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant provides social media platform services which allow users to post and subscribe to audiovisual content, including adult entertainment content, on the Internet, under the name “onlyfans” and via the domain name <onlyfans.com>. The Complainant registered the domain name <onlyfans.com> in 2013.

The Complainant is the owner of the following trademark registrations, amongst which:

- The European Union registration of the trademark ONLYFANS n° 017912377 filed on June 5, 2018 and registered on January 9, 2019 in the International Classes 9, 35, 38, 41 and 42;

- The U.S registration of the of trademark ONLYFANS n° 5769267 filed on October 29, 2018 and registered on June 4, 2019 for “arranging subscriptions of the online publications of others” in the International Class 35;

- The U.S. registration of the trademark ONLYFANS.COM n° 5769268 filed on October 29, 2018 and registered on June 4, 2019 for “arranging subscriptions of the online publications of others” in International Class 35.

The Complainant has made extensive use of the trademarks and domain name above. According to Alexa Internet (Annex F of the Complaint), the Complainant’s website “www.onlyfans.com” is the 379th most popular website on the World Wide Web, and it is the 213th most popular website in the United States.

The disputed domain name was registered on March 27, 2021. It resumes to a website offering adult entertainment content, featuring non-downloadable video, photographs, images, audio etc.

5. Parties’ Contentions

A. Complainant

On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the dominant part of the disputed domain name comprises the earlier trademark ONLYFANS in its entirety. It contends further that the addition “xxx” does not avoid confusion and should be considered as descriptive for adult entertainment services. The addition of the generic Top-Level Domain (“gTLD”) “.com” must be viewed as a standard registration requirement irrelevant to determine the confusing similarity.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that nothing indicates that the Respondent has been using ONLYFANS and ONLYFANS.COM in any way that would provide rights or legitimate interests in the domain name. He has never been given any license or authorization of any other kind by the Complainant.

The fact for the Respondent to use a domain name adding the letters “xxx” and resuming to a website with content similar to the one promoted by the Complainant, partly pirated from the Complainant’s website, would further confirm the absence of legitimate interests.

(c) the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that the registration of a domain name which is confusingly similar to a widely-known trademark creates a presumption of bad faith. The Complainant further asserts that the addition of the “xxx” and the exploitation of the website for services which are in direct competition with those of the Complainant confirms bad faith registration, as does the absence of response by the Respondent to the cease and desist letter sent by the Complainant, and the fact for the Respondent to have hidden its identity at the time of registration. The use made by the Respondent would be an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ONLYFANS and ONLYFANS.COM, which precede the disputed domain name and which have been recognized by numerous prior UDRP panel decisions (Fenix International Limited c/o Walters Law Group v. Marouan Elmarchoum, Marouan, WIPO Case No. D2021-1583; Fenix International Limited c/o Walters Law Group v. Domain Administrator, SeePrivacyGuardian.org/ Achmad Yadi, WIPO Case No. D2021-0583; Fenix International Limited c/o Walters Law Group v. Reshad Bashir, AXC BV, WIPO Case No. D2021-1603; Fenix International Limited v. Tony Lear, midieast corp., WIPO Case No. D2021-1304).

Secondly, the disputed domain name contains the trademarks ONLYFANS and ONLYFANS.COM, in which the Complainant has earlier rights, in their entirety. It shall therefore be considered confusingly similar to them for purposes of UDRP standing (Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of the term “xxx” does not constitute an element so as to avoid confusing similarity for purposes of the Policy (Fenix International Limited v. WhoisGuard Inc. / Gary Brown, WIPO Case No. D2021-0830(<onlyfanslegendxxx.com>); Fenix International Limited v. Leon Key, Key International enterprises LLC, WIPO Case No. D2021-0836(<onlyfansxxx.com>)).

Finally, this Panel finds that the relevant comparison is made between the second level portion of the disputed domain name only, and that the gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (Section 1.11 of WIPO Overview 3.0). However, in the present case, the “.com” portion of the U.S. trademark ONLYFANS.COM n° 5769268 is also present in the disputed domain name.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s ONLYFANS and ONLYFANS.COM trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is a well-established view of previous UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (Aguas de Cabreiroa, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

This Panel retains notably the following considerations:

- There is no evidence that the Respondent has been commonly known by the disputed domain name;

- The Respondent has not been granted a license or authorization of any kind by the Complainant (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055), and has never had a business relationship with the Complainant (Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312);

- The Respondent used the disputed domain name to redirect Internet users to a website containing content which is very similar to the content offered by the Complainant, and thus in direct competition with it;

- The Respondent used the addition “xxx”, which stands for or indicates pornography of an explicit or extreme nature, i.e. (part of) the content of both the Complainant’s and the Respondent’s websites, to misleadingly divert consumers to its own website; such use cannot be considered fair.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.

A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademarks prior to registering the disputed domain name. Previous UDRP panels have consistently found that registration of a domain name that is confusingly similar to a widely-known trademark, as is the case here, creates a presumption of bad faith (WIPO Overview 3.0, section 3.1.4). Such is true in the present case, in which the Respondent registered the disputed domain name after the Complainant started using and registered its trademarks, and after the Complainant’s services became well known. In this Panel’s view, it is very unlikely that the Respondent did not have actual knowledge of the Complainant, given the popularity of the website exploited under the trademarks ONLYFANS and ONLYFANS.COM, before the registration of the disputed domain name. The trademarks of the Complainant have been recognized in numerous previous UDRP proceedings as internationally well known amongst the relevant public (Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna, WIPO Case No. D2021-0327).

It is very likely that the Respondent attempted to capitalize on the goodwill attached to the ONLYFANS and ONLYFANS.COM trademarks, and to disrupt the Complainant’s business, according to Policy, paragraphs 4(b)(iii) and (iv).

This finding is confirmed, namely, by the following facts:

- The disputed domain name includes the Complainant’s trademarks and the additional letters “xxx”, which directly refers to adult entertainment content, and thus enhances the likelihood of confusion, by suggesting that the website at the disputed domain name is authorized by the Complainant to provide access to the Complainant’s services. It constitutes an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website;

- The Respondent operates a website that provides products and services in direct competition with those of the Complainant;

- The Respondent did not respond to the cease and desist letter sent by the Complainant prior to the proceeding (News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623);

- The Respondent’s use of a privacy service combined with a failure to submit a response is additional evidence of bad faith (Section 3.6 of WIPO Overview 3.0).

In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <onlyxxxfans.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: December 7, 2021